All Things Pros focuses exclusively on patent prosecution. The blog uses PTAB decisions, and the prosecution history that led to appeal, to discuss good and bad strategies for handling 102, 103, 101 and 112 rejections. Claim construction using Broadest Reasonable Interpretation is also a major focus. And sometimes you'll find prosecution topics such as after-final, RCE, and restriction practice.

Sunday, January 2, 2011

Top 10 Mistakes in Arguing on Appeal to the BPAI

I've been blogging about BPAI decisions for about a year and a half, and I definitely see some common themes about which arguments win on appeal and which ones don't.

So I'll start off 2011 with this list of "Top 10 Mistakes in Arguing on Appeal to the BPAI" :

This ranking is not based on anything fancy like a statistical study. Instead, this is my overall impression, based on reading many BPAI decisions, of which tactics are commonly used yet unwise.

Also, I won't address the question of whether or not the BPAI is legally correct in treating these actions as mistakes that are damaging to the Applicant. For example, whether the BPAI is properly allowed to affirm simply because the Applicant didn't address an Examiner finding.

I'll follow up this list with other posts that go into more detail on each of these mistakes.

21 comments:

Probably correct, this list mirrors closely the list I'd make regarding prosecution errors. One that isn't on your list, but that I see from time to time (with increasing frequency it seems :( ) is a factual misstatement being made.

Since you bring it up, I see a difference between "prosecution errors" and my list of errors at appeal.

My list was limited to errors that I can discern from reading BPAI decisions. IOW, a case that was a) on appeal and b) involved something that I could infer was a mistake simply from reading a BPAI decisions.

>One that isn't on your list ... is a factual >misstatement being made.

What's your definition of "factual mistatement"?

Consider the statement "Ref doesn't teach a widget." It can't be a misstatement simply because the BPAI determined that Ref does teach a widget. One, reasonable minds can differ on what the reference teaches. Two, I've seen decisions in which I feel very strongly that the Board read the reference incorrectly.

So short of the practitioner misquoting from the Ref, I think it's hard to say a statement made by a practitioner is factually incorrect.

A statement of some alleged fact which the attorney believes to be a fact which I then go and google a piece of art to show as evidence that the supposed fact is indeed not a fact. That is, they misstated a fact.

In other words, they lied, with or without knowing they were lying.

I would say that most often I see this regarding some technical matter that they were simply ignorant of and they thought they'd wing it.

Consider the statement "specialized compound is dissolved at a rate of 10 mol/min in such and such solution" I then go and find a reference that states differently.

Or consider the statement that "specialized compound does not dissolve at x temperature in such and such solution". I then go retrieve a reference (or several references) which states that such a compound does in fact dissolve at x temperature in such and such solution. Perhaps it only dissolves a little, but it still dissolves some.

It's practically attempted fraud on the office (often through ignorance which might not technically be fraud, but you get the point) but since I catch them I guess nothing ever comes of it.

And trust me when I say that this happens increasingly more frequently as I become more and more knowledgable and capable of finding references on point. I would say, maybe 3 to 4 times a year?

>It's practically attempted fraud on the office >(often through ignorance which might not >technically be fraud, but you get the point)

No, misstatements made in ignorance are absolutely *not* fraud. Fraud requires an intent to deceive. You may see this as a "technicality", but attorneys are generally sensitive to people throwing words like "fraud" around.

>since I catch them I guess nothing ever comes >of it.

And what *should* happen when factual misstatements are made without an intent to deceive? Don't we usually call this a "mistake"?

>I would say, maybe 3 to 4 times a year?

Your statements strongly imply you're an Examiner. So in a year, you see scores of responses -- if not a hundred, right? I'd say a rate of 5-6% for misstatements is quite acceptable. We're all human and we all make mistakes. Right?

I'm aware Karen, I'm just saying it is in effect a mini-fraud and should be punished imo. Calling it a mistake is probably right in many instances, but there is no reason for you to not have some punishment for making such a scam-prone mistake. It doesn't have to be a huge punishment, like examiners are "punished" in a round about way by not getting counts for more non-finals. It doesn't need to be more serious than that. But something should be done rather than just letting it slide wholesale. That's just too lenient.

And btw, no, 5-6% is not really correct, because not all of those responses will contain factual statements that are relevant to this discussion. I'd guess, just off hand, that relatively few cases actually have a lot of relevant factual things brought up. Maybe 40% tops? So what we're really talking about is a good proportion of relevant factual discussions being "opseys". I'd guess a good tenth or a bit more. That's getting kind of high, and that's why I mentioned it, it seems to be getting kind of high.

Bottom line, if you want to trot out some factual argument you should have to perform some due diligence in setting out the argument rather than just being permitted to just take a big ol' dump all over the place. Either know what you're talking about, or go find someone/a teaching who does. Else just stfu.

Also, you should not be able to so easily make the already hard and complicated patenting process more hard and complicated by throwing in potential lies and falsehoods without a care in the world. Because lets be honest, if it took me 5 minutes to look up, or even an hour or so, it was pure ignorance mixed with negligence that lead to the factual misstatement.

If they just came in and said "well we believe x happens" instead of putting on the record that indeed, factually speaking, they argue that x happens then that would be fine. But they're allowed to not put any qualifiers notifying the examiner that what they're saying is potentially completely bs. What this leads to is examiners suspecting everyone of bsing all the time. And there's no reason for that.

>if you want to trot out some factual argument >you should have to perform some due diligence >in setting out the argument rather than just >being permitted to just take a big ol' dump all >over the place.

I get what you're saying. You want a standard where it's not enough that you *don't know it's not true*, but must instead have a reasonable basis for believing it to be true.

As a practical matter, I'm not sure what sort of "punishment" could work.

>If they just came in and said "well we believe >x happens" instead of putting on the record >that indeed, factually speaking, they argue >that x happens then that would be fine.

I'm sure many many attorneys are careful to do just this.

So you'd be ok with allowing an attorney to avoid any possibility of a factual misstatement by qualifying the statement as belief?

Wouldn't this lead to *more of* "examiners suspecting everyone of bsing all the time"?

"Bottom line, if you want to trot out some factual argument you should have to perform some due diligence in setting out the argument rather than just being permitted to just take a big ol' dump all over the place. Either know what you're talking about, or go find someone/a teaching who does. Else just stfu."

But it's still going to be okay for examiners to just put into their OA's that "...it's notoriously old and well known..." without any reference or other evidence, right? Amirite?

"A statement of some alleged fact which the attorney believes to be a fact which I then go and google a piece of art to show as evidence that the supposed fact is indeed not a fact. That is, they misstated a fact."

It's amazing that in 2+ years of trolling these blogs you still haven't learned/don't understand the difference between evidence, facts, and argument. You've got to be the single dumbest examiner 6tard in the PTO.

"But it's still going to be okay for examiners to just put into their OA's that "...it's notoriously old and well known..." without any reference or other evidence, right? Amirite? "

You are right. And we're talking about the exact same thing here, you don't want examiners taking official notice of things they have no clue about, and I don't want prosecutors taking the equivalent of official notice of a fact on their side when they have no clue about it.

In essense, neither of us want to have the other side spouting nonsense about facts.

"It's amazing that in 2+ years of trolling these blogs you still haven't learned/don't understand the difference between evidence, facts, and argument. You've got to be the single dumbest examiner 6tard in the PTO. "

It's amazing that in 8 lines or so of text you didn't manage to show anywhere where I actually said anything which indicated that I don't understand the difference between facts, evidence and argument.

"It's amazing that in 8 lines or so of text you didn't manage to show anywhere where I actually said anything which indicated that I don't understand the difference between facts, evidence and argument."

Why do I need to when you post nonsense like this that proves exactly what I said:

"And we're talking about the exact same thing here, you don't want examiners taking official notice of things they have no clue about, and I don't want prosecutors taking the equivalent of official notice of a fact on their side when they have no clue about it."

Examiners are fact finders. That is, or is supposed to be, their job. When they take Official Notice that is part of the fact finding process. Attorneys are advocates. When they make arguments they are making arguments, not finding or establishing facts.

I'm well aware that this falls under arguing JD. I don't care if you want to call stating a false fact for the record while presenting/in support of, arguments not fact finding, lying, arguing, lying while arguing, arguing a false fact, stating a false fact while arguing, picking your nose, or punching JD in the face. You are arguing a point of semantics. Whatever name you want to give the practice, it should be nipped in the bud.

And for having graduated so high in your class, you're certainly an embarrassement to your institution by implying that this "arguing the facts" or whatever you wish to call it, should have nothing to do with actual facts and that instead it should be open to being "arguing complete bull".

So you'd be ok with allowing an attorney to avoid any possibility of a factual misstatement by qualifying the statement as belief?

Wouldn't this lead to *more of* "examiners suspecting everyone of bsing all the time"? "

You'd think that attorneys would do that, but they don't. At least that I've seen. Not on the written record, they do in interviews.

And no, I have no problem with them qualifying their statements. If they qualify it then I'm well aware that they're just bsing, maybe correctly, maybe not. If they didn't qualify it, and they knew they get a small fine or something, then I'd be more willing to trust them that they had a reasonable basis for believing what they said to be true. But when is it appropriate to rely on some information they present to you as argument to allow the case when you're incapable of duplicating the analysis here at the office? I don't really know off hand, I have forgotten, I'd have to ask, I might have to ask for it submitted as evidence if I wanted to rely on it to allow the case.

For instance, I once had a guy send in an "argument" telling me all about these chemical properties of this certain molecule, and then tell me what some molecular mass ratios would be in a certain solution containing that molecule and another chemical. I had no way of verifying this information (he told me what the molecular mass was but I could find it nowhere in the literature as it was a very rarely used molecule to begin with, and I furthermore could not find out what all the nuclides were) but it did seem probable that it was correct. I don't remember what happened in that case but it does stand out to me as a time when they did do their homework on what they wanted to argue.

I go through a lot of fin trouble to be a lot more factually accurate than your avg dude, but then I just get shtted upon in their "arguments"? No wonder your avg examiner doesn't give two shts about being factually accurate, your avg attorneys don't either.

Wow, this thread got wild fast. If it isn't too late to address the original topic, I think it's important.

I've had cases where I wrote in my draft that something-or-other wasn't in reference X, and then double-checked and found that I was wrong. Just in case I fail to catch an error like that, I will often say something like "the undersigned attorney does not see where Y is taught in reference X. If the Examiner does believe that such a teaching is present, he/she is requested to specify exactly where such a teaching is found."

That's verbose but safer - if I make a mistaken unqualified assertion and the Examiner misses it too, I've got a time bomb in the file wrapper.

>I think he said he had a bomb in the file >wrapper. That would be of concern to me.

OK, I'll be more precise.

Robert Groover, why do you think "making a mistaken unqualified assertion which the Examiner misses" is a "time bomb in the file wrapper". IOW, what bad things could happen because of the attorney's mistaken unqualified assertion?

Disclaimer

Disclaimer: The opinions expressed on this Blog/Web Site ("Blog") are those of the author and do not represent the views of her law firm, colleagues, or clients. The Blog is not legal advice and is offered for educational purposes only. The Blog does not create any attorney-client relationship. Comments posted on the Blog are not treated as confidential; therefore, do not post sensitive information